Ex Parte Bleibler et al

Patent Trial and Appeal Board

Nov 30, 2012

10502744 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/502,744 07/28/2004 Alexander Bleibler 033972-021 6075
7590 11/30/2012
Bruce J. Boggs, Jr.
Bingham McCutchen, LLP
Three embarcadero Center
San Francisco, CA 94111-4067
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER BLEIBLER and RETO CLENIN
____________

Appeal 2010-009623
Application 10/502,744
Technology Center 3600
____________

Before GAY ANN SPAHN, BRETT C. MARTIN, and
RICHARD E. RICE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Alexander Bleibler and Reto Clenin (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection of claims 32-45,1 as
follows:
claims 32-36 and 38-45 under 35 U.S.C. § 103(a) as
being unpatentable over the embodiments of Figures 1 and 7 of
Schwegler (US 6,851,232 B1, issued Feb. 8, 2005) (hereinafter
referred to as “Schwegler A” for consistency with the Briefs
and Answer) and the embodiment of Figures 2 and 3 of
Schwegler (hereinafter referred to as “Schwegler B” for
consistency with the Briefs and Answer); and
claim 37 under 35 U.S.C. § 103(a) as being unpatentable
over Schwegler A, Schwegler B, and Kitano (US 6,591,949 B2,
issued Jul. 15, 2003).
Appellants cancelled claims 1-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b)
against: (1) claims 32 and 43 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention; and (2) claim 44
under 35 U.S.C. § 101 for failing to be directed to statutory subject matter,

1 The Examiner’s objection to claims 32, 34, 43, and 45 for certain
informalities is a petitionable (rather than appealable) matter. App. Br. 9.
Thus, the relief sought by the Appellants should have been presented by a
petition under 37 C.F.R. § 1.181 instead of by appeal to this Board. Ex
Parte Frye, 94 USPQ.2d 1072, 1077-78 (BPAI 2010) (precedential).
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or alternatively, under 35 U.S.C. § 112, second paragraph, as being
indefinite. We do not sustain the rejections of claims 32-36 and 38-43 under
35 U.S.C. § 103(a) as unpatentable over Schwegler A and Schwegler B and
claim 37 under 35 U.S.C. § 103(a) as unpatentable over Schwegler A,
Schwegler B, and Kitano, because these rejections necessarily are based
upon speculative assumptions as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962). We also do not sustain the
rejection of claim 44 under 35 U.S.C. § 103(a) as unpatentable over
Schwegler A and Schwegler B, because the claimed recitation of a use,
without setting forth at least one step involved in the process, results in an
improper definition of a process, i.e., results in a claim which is not a proper
process claim under 35 U.S.C. § 101 or alternatively, which is indefinite
under 35 U.S.C. § 112, second paragraph. See, e.g. Ex Parte Dunki, 153
USPQ 678 (BPAI 1967) and Clinical Products, Ltd. v. Brenner, 255 F.
Supp. 131 (D.C. D.C. 1966). Finally, we also do not sustain the Examiner’s
rejection of claim 45 under 35 U.S.C. § 103(a) as unpatentable over
Schwegler A and Schwegler B for reasons to be discussed infra.

The Claimed Subject Matter
Claims 32, 43, 44, and 45 are independent and claim 32, reproduced
below, is illustrative of the subject matter on appeal.
32. A method for production of a reinforcing
device for load-bearing structures, having a
lamellar structure, terminating in an anchoring
device, where the lamellar structure is comprised
of a plurality of separate or separable individual
layers, between which, at least in the region of the
anchoring device, insert layers have been arranged,
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characterized in that the method has the following
steps:
(a) division of the thickness of the lamella in
order to enlarge the surface;
(b) insertion of a plurality of insert layers
between the individual layers produced according
to (a);
(c) fusion of the lamellar structure to give a
sandwich-like assembly package, preferably2 via
exposure to heat and/or pressure;
(d) attachment of the anchoring device,
preferably with the aid of a suitable clamping
device.

ISSUES
This appeal turns on the following issues:
First, would one of ordinary skill in the art understand the scope and
meaning of independent claim 32’s “method for production of a reinforcing
device for load-bearing structures”?
Second, would one of ordinary skill in the art understand the scope
and meaning of independent claim 43’s “method for reinforcement and/or
renovation of construction works”?
Third, is independent claim 44’s “[u]se of a reinforcing device”
directed to statutory subject matter or alternatively, indefinite if it does not
recite of at least one positive, active step?
Fourth, would it have been obvious to one of ordinary skill in the art
to substitute bidirectionally oriented fabric for Schwegler B’s metal plates to

2 The Examiner should consider whether any phrase in the claims beginning
with the word “preferably” or “preference” is sufficiently definite to limit
the claim in which it is present. See App. Br., Clms. App’x, claim 32 (ll. 10
and 11), claim 34 (l. 4), claim 39 (l. 3), claim 40 (l. 2), claim 41 (ll. 2 and 3),
claim 42 (l. 2), 44 (l. 2), and claim 45 (ll. 8 and 10).
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satisfy claim 45’s recitation of “insert layers comprising a bidirectionally
oriented fabric” given Appellants’ Specification’s disclosure that either
fabric inserts or metal plates could be used as the claimed insert layers?

PRINCIPLES OF LAW
The language of a claim satisfies 35 U.S.C. § 112, second paragraph,
only if “one skilled in the art would understand the bounds of the claim
when read in light of the specification.” Exxon Research & Eng’g Co. v.
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). “It is the applicants’
burden to precisely define the invention, not the PTO’s. See 35 U.S.C.
§ 112, ¶ 2 . . . [T]his section puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).

OPINION
First Issue under 35 U.S.C. § 112, Second Paragraph, for Indefiniteness
Independent claim 32 is purportedly directed to “[a] method for
production of a reinforcing device for load-bearing structures,” but the body
of the claim, i.e., paragraphs (a)-(d), is not drafted in the usual way, which
according to Faber on Mechanics of Patent Claim Drafting (hereinafter
“Faber”) is:
Generally, the verbs in a method claim need
not be phrased in any particular voice or tense as
long as there is no ambiguity and the requirements
of section 112 are met. Nevertheless, it must be
remembered that the elements of a method claim
are method steps, which should usually be verbal
(gerundial) phrases, introduced by a gerund or
verbal noun (the “-ing” form of a verb).”
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Faber, Sixth Edition, Practicing Law Institute, Copyright 2012, p. 4-4 (citing
to Ex parte Lewin, 154 USPQ 487 (BPAI 1966)).
Instead of beginning with the usual verbal (gerundial) phrase, each of
paragraphs (a)-(d) begins with a noun, namely, “division,” “insertion,”
“fusion,” and “attachment,” respectively. Because the aforementioned claim
terms are all nouns (see MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY,
TENTH EDITION, 1997), their plain meaning does not define a positive or
active step with the clarity of a gerund or verbal noun. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their
plain meaning unless the plain meaning is inconsistent with the
specification).3 We conclude that this lack of clarity runs afoul of the
requirements of 35 U.S.C. § 112, second paragraph, i.e., to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention. A claim must be definite so as not to confuse potential infringers
in knowing whether it is the end product (or article of manufacture) or
method/process for making that end product (or article of manufacture) that
they must avoid. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (reasoning that lack of clarity as to when a
mixed subject matter claim would be infringed renders the claim invalid for
indefiniteness). Indeed, we note that the end product (or article of
manufacture) of claim 45, purportedly directed to “[a] reinforcing device for
load-bearing structures,” recites either identical or practically identical
paragraphs (c) and (d), albeit in wherein clauses, in its last four lines. Such
identical or practically identical phrases in both method and product (or

3 We find nothing inconsistent with the plain meaning in Appellants’
Specification. See, e.g., Spec. 7, l. 20 – 10, l. 18.
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article of manufacture) claims further points out the ambiguity in the claim
language.
Accordingly, we conclude that claim 32 fails to recite a positive,
active step, and that it is thus unclear whether claim 32 covers an end
product (or article of manufacture) or a method/process of producing such an
end product (or article of manufacture). Without the recitation of a positive,
active step specifying how the reinforcing device for load-bearing structures
is to be produced, a person of ordinary skill in the art cannot determine
which production method is encompassed by the claim. See Ex Parte
Erlich, 3 USPQ.2d 1011, 1107 (BPAI 1986) (“While . . . the claims need not
recite all of the operating details, we do find that a method claim should at
least recite a positive, active step(s) so that the claim will ‘set out and
circumscribe a particular area with a reasonable degree of precision and
particularity,’ and make it clear what subject matter [the] claims encompass,
as well as making clear the subject matter from which others would be
precluded.”) (citations omitted); see also Clinical Products Limited v.
Brenner, 255 F. Supp. 131, 133 (D.C. D.C. 1966) (“[A] proper process or
method claim should recite at least one process step.”). The determination
of the scope and meaning of Appellants’ method for production of a
reinforcing device for load-bearing structure recited in independent claim
32, as a whole, is based on mere speculation.
Thus, we enter a new ground of rejection against independent claim
32 under 35 U.S.C. § 112, second paragraph, as being indefinite. No
inference should be drawn from the Board's failure to make a new ground of
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rejection for other claims.4 As the Board's function is primarily one of
review, we leave to the Examiner the determination of what to do with
dependent claims 33-42 in view of the new ground of rejection to
independent claim 32 from which all of the dependent claims directly
depend.

Second Issue under 35 U.S.C. § 112, Second Paragraph, for Indefiniteness
Independent claim 43 is directed to “[a] method for reinforcement
and/or renovation of construction works,” but for the same reasons as
discussed supra with respect to independent claim 32, fails to recite a
positive, active step which explains how the construction works are either
reinforced or renovated.5 Without such a positive, active step, a person of
ordinary skill in the art cannot determine which reinforcement and/or
renovation methods are encompassed by the claims. See Erlich at 1107
(“While . . . the claims need not recite all of the operating details, we do find
that a method claim should at least recite a positive, active step(s) so that the
claim will ‘set out and circumscribe a particular area with a reasonable
degree of precision and particularity,’ and make it clear what subject matter
[the] claims encompass, as well as making clear the subject matter from
which others would be precluded.”) (citations omitted). See also Clinical
Products at 133 (“[A] proper process or method claim should recite at least

4 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP) § 1213.02 (“Since the exercise of authority under 37 C.F.R. §
41.50(b) is discretionary, no inference should be drawn from a failure to
exercise that discretion”).
5 Although claim 43 incorporates the subject matter of claim 32, since we
found supra that claim 32 recites no positive, active steps, claim 43 likewise
does not recite any positive, active steps.
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one process step.”). Accordingly, as with independent claim 32 discussed
supra, the determination of the scope and meaning of Appellants’ method
for reinforcement and/or renovation of construction works recited in claim
43, as a whole, is based on mere speculation, and we enter a new ground or
rejection against independent claim 43 under 35 U.S.C. § 112, second
paragraph, as being indefinite.

Third Issue under 35 U.S.C. § 101 for Lack of Statutory Basis or
alternatively, under 35 U.S.C. § 112, second paragraph, for indefiniteness
Independent claim 44 is directed to “[u]se of a reinforcing device,”
but fails to recite a positive, active step for the same reasons as discussed
supra with respect to independent claim 32.6
The most pertinent authority that this Board could find in relation to
the current propriety of the exact form of claim employed by Appellants is
the following statement from the Court of Customs and Patent Appeals
majority Opinion for In re Fong, 288 F.2d 932, 933 (1961):
The title of the application is striking in that it truly
and succinctly states what the invention is, the use
of PVP as a soil-suspending agent. * * * Their
discovery was simply a new soil-suspending agent,
a new use for a known compound. But because
the law does not permit the claiming of such an
invention in terms of use, the claims are directed to
a process, a washing solution, or a composition for
making the latter, conventional and recognized
ways of claiming inventions predicated on the
discovery of a new use.”

6 Although claim 44 incorporates the subject matter of claim 32, since we
found supra that claim 32 recites no positive, active steps, claim 44 likewise
does not recite any positive, active steps.
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Thus, according to the Manual of Patent Examining Procedure (MPEP)
§ 2173.05(q), where a claim, such as claim 44, which provides for the use of
“a reinforcing device,” but does not set forth a positive, active step involved
in the method/process, it is unclear what method/process Appellants are
intending to encompass. A claim is indefinite where it merely recites a use
without a positive, active step delimiting how this use is actually practiced.
Accordingly, we enter a new ground of rejection against claim 44
under 35 U.S.C. § 101 for not being directed to statutory subject matter, or
alternatively, under 35 U.S.C. § 112, second paragraph, as being indefinite.
The claimed recitation of use, without setting forth a positive, active step
involved in the method/process, results in an improper definition of a
method/process, i.e., results in a claim which is not a proper method/process
claim under 35 U.S.C. § 101, or alternatively, under 35 U.S.C. § 112, second
paragraph. See, e.g., Ex Parte Dunki, 153 USPQ 678, 679 (BPAI 1967) and
Clinical Products at 133 (“[A] proper process or method claim should recite
at least one process step.”). In other words, we conclude that independent
claim 44’s “[u]se of a reinforcing device,” which does not recite of a
positive, active step, is either not directed to statutory subject matter, or is
indefinite.

Fourth Issue under 35 U.S.C. § 103(a) as unpatentable over Schwegler A/B
Independent claim 45 is directed to “[a] reinforcing device for load-
bearing structures” including, inter alia, insert layers comprising a
bidirectionally oriented fabric.” App. Br., Clms. App’x.
The Examiner finds that Schwegler A as modified by Schwegler B
“discloses a reinforcing device with lamellae fused to intermediate layers.”
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Ans. 8. The Examiner also finds that Appellants’ “disclosure that various
alternate insert layers, including bidirectionally oriented textile fabric and
metal plates, could be used as would be appreciated by one skilled in the art
and without departing from the scope of the invention.” Ans. 8-9 (citing
Spec. 3, ll. 18-22).
Appellants argue that the Examiner “asserts, without support or
citation, that bidirectionally oriented fabric could be used,” and that “such an
unsupported assertion is an insufficient basis for rejecting a claim.” App.
Br. 15.
The Examiner responds that Appellants “ha[ve] disclosed that metal
plates are equivalent to fabric inserts or bidirectionally oriented fabric
inserts,” so that “[a]s [Appellants] ha[ve] disclosed this equivalence, and as
Schwegler discloses the equivalent metal plates, the claim limitations are
met.” Ans. 11.
The Examiner appears to be saying that since Schwegler A’s Figure 7
embodiment discloses metal (because of diagonal cross-hatching according
to the Manual of Patent Examining Procedure (MPEP) § 608.02 IX, entitled
“Drawing Symbols”) plates 15 as insert layers between split strips 2ʹ at the
end of carbon or CFK panel 2 (see Schwegler, col. 1, l. 51 and col. 4, ll. 56-
62), then one of ordinary skill in the art would substitute bidirectionally
oriented fabric for Schwegler’s metal plates because Appellants’
Specification admits that both bidirectionally oriented fabric and metal
plates can be used for the insert layers. We cannot agree with the
Examiner’s logic. At page 3, lines 18-22, of Appellants’ Specification,
Appellants are setting forth a description of their invention and Appellants
disclose that the insert layers can be made of either fabric inserts or metal
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plates. This disclosure is part of Appellants quid pro quo for possibly
receiving a patent issued from the present patent application; however, this
disclosure is not an admission that can be used as prior art against
Appellants as the Examiner appears to have attempted to do. Schwegler’s
Figure 7 embodiment discloses using metal plates as the insert layer and
metal plates do not meet claim 45’s language of bidirectionally oriented
fabric. Thus, the Examiner has failed to show that it would have been
obvious to one of ordinary skill in the art to modify Schwegler A to
substitute bidirectionally oriented fabric for the metal plates 15 disclosed
therein.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 45 under 35 U.S.C. § 103(a) as being unpatentable over
Schwegler A and Schwegler B.

Prior Art Rejections of claims 32-44
Based on the reasons discussed with regard to the first and second
issues, we conclude that independent claim 32 is indefinite. As stated supra,
we do not sustain the rejections of claims 32-36 and 38-43 under 35 U.S.C.
§ 103(a) as unpatentable over Schwegler A and Schwegler B and claim 37
under 35 U.S.C. § 103(a) as unpatentable over Schwegler A, Schwegler B,
and Kitano, because these rejections necessarily are based upon speculative
assumptions as to the meaning of the claims. See Steele. We also do not
sustain the rejection of claim 44 under 35 U.S.C. § 103(a) as unpatentable
over Schwegler A and Schwegler B, because the claimed recitation of a use,
without setting forth a positive, active step involved in the process, results in
an improper definition of a process, i.e., results in a claim which is not a
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proper process claim under 35 U.S.C. § 101, or alternatively, is indefinite
under 35 U.S.C. § 112, second paragraph. See Dunki at 679 and Clinical
Products at 133. However, it should be understood that our decision in this
regard is based solely on the indefiniteness and lack of statutory basis of the
claimed subject matter of independent claims 32, 43, and 44, respectively,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejection.

DECISION
We REVERSE the Examiner’s rejections of claims 32-45.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW
GROUNDS OF REJECTION against: (1) claims 32, 43,and 44 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellants regard as
the invention; and (2) claim 44 under 35 U.S.C. § 101 because the claimed
invention is not directed to statutory subject matter, or alternatively, under
35 U.S.C. § 112, second paragraph, for indefiniteness.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides
that Appellants must, WITHIN TWO MONTHS, exercise one of the
following options:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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